DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1, 5-6, 9-10, 13-14, 16-21, 23, 25, 27-31 are pending. Claims 6, 9, 17-21, 23, and 27-31 are withdrawn. Claims 2-4, 7-8, 11-12, 15, 22, 24, and 26 are cancelled. Claims 1 is original. Claims 5, 10, 13-14, and 16 are currently amended.
Response to Amendment
The amendments to claims 5, 10, 13-14, and 16 overcome the objections to these claims, and thus the objections are withdrawn. The amendment to claim 10 overcomes the 35 USC 112(b) rejection of claim 10, and thus that rejection is withdrawn.
Response to Arguments
Applicant's arguments filed 05/05/2026 have been fully considered but they are not persuasive.
Applicant argues that if a user were to draw on the mouthpiece of the adapter, air would be drawn through the secondary inlets of the adapter, but this air would not flow around any mouthpiece of the device, and that the primary outlet of the device of Wensley cannot be considered a mouthpiece because it is never disclosed as such.
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Depicted above is the adapter of Wensley coupled to an aerosol generating device.
In reviewing Applicant’s assertion that the primary inlet of the adapter from the aerosol generating device, the disclosure of Wensley was reviewed to determine if the removal of the adapter from the aerosol generating was disclosed, and whether the primary inlet of the adapter covers a portion of the aerosol generating device that could reasonably be considered a mouthpiece.
Wensley discloses that an adapter of the device can be attached to the outlet end of an aerosol generation device, e.g. electronic cigarette, where the adapter comprises a mouthpiece, and the adapter may be removably coupled to the aerosol generating device, ([0028]). This established the adapter may be removed from device. Wensley further discloses that a trip point of an aerosol generating device, (e.g. electronic cigarette) is controlled by an air flow switch, and in some cases the air flow switch in the aerosol generating device as provided herein is located at an end of the device opposite from an outlet end (e.g., mouthpiece) of the device. Wensley refers to the adapter as the adapter, and the aerosol generating device as the device or electronic cigarette. Because the device of Wensley is described as having an outlet end that may be considered a mouthpiece, Applicant’s argument is not persuasive. The adapter of Wensley is disclosed as allowing airflow into the adapter through the primary inlet and secondary inlets, where this flow mixes in the adapter, where the mouthpiece of the electronic cigarette is located. Examiner believes there is clear support for the electronic cigarette having a mouthpiece to which the adapter is fitted, and that the air flow through the primary inlet and secondary mixes in the adapter where the mouthpiece of the device is inserted, which necessarily would meet the claimed limitation of the airflow through the internal cavity around the mouthpiece. Applicant arguments are not persuasive.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, and 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wensley et al. (US 2015/0196060 A1).
Regarding claim 1, Wensley discloses:
A cap, ([0007] adapter), for use with a delivery system, ([0007] disclosing an aerosol generating device for use with the adapter), the cap comprising an outer wall defining an internal cavity, ([0007] the adapter comprises a hollow main body), with an entrance opening at a first end of the cap, the internal cavity configured to receive a mouthpiece of the delivery system, wherein the cap outer wall includes at least one aperture disposed at a second end of the cap which is opposite to the first end and arranged to allow airflow through the internal cavity, around the mouthpiece and out of the cap via the at least one aperture when the cap is fitted to a delivery system, ([0007] the adapter has opposing first and second open ends, with one open end configured to couple to and surround the outlet of the air flow channel (of the aerosol delivery system) and the other end comprising an outlet (anticipating an aperture), see Fig 1A and 1B reproduced below).
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Regarding claim 13-14, Wensley discloses:
A cap according to claim 1, wherein an airflow passage is defined through the internal cavity between the aperture(s) and the entrance opening, further comprising at least one air inlet disposed in the outer wall, wherein the airflow passage is defined between the air inlet(s) and the aperture(s), (Fig 1A and 1B, depicting an airflow passage defined between the aperture and the entrance opening, with at least one air inlet (the secondary inlets) disposed in the outer wall).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wensley et al. (US 2015/0196060 A1) as applied to claims 1 and 14 above, and further in view of Macko (US 2017/0150753 A1).
Regarding claim 5 and 16, Wensley discloses:
A cap according to claim 1, wherein the outer wall comprises a sidewall extending from an air outlet to the entrance opening, wherein the or each air inlet is provided in the side wall, (see Fig 1A and 1B).
Wensley does not explicitly disclose the outer wall comprises an end wall, wherein the end wall comprises the at least one aperture.
Macko teaches electronic vapor devices, ([0001]), and thus is within the inventor’s field of endeavor. Macko teaches the size, shape, and position of each outlet on a mouthpiece may be varied based on the desired propertied of an exiting vapor, ([0038]). Macko teaches that the number, angle, and size of the outlets can be varied as needed to obtain a desired resistance to draw (RTD) of the e-vapor device, ([0039]).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have modified the adapter of Wensley according to the teachings of Macko.
In particular, one of ordinary skill in the art, contemplating the invention of Wensley and the teachings of Macko, would have found it obvious to provide an end wall across the outlet of Wensley and provide apertures of an appropriate shape, number, and size to obtain a desired resistance to draw through the modified adapter of Wensley. This is considered to be the application of a known technique to a known device ready for improvement to yield predictable results, MPEP 2143 I. Examples of Rationales (D).
Here the prior art of Wensley contained the base device. The prior art of Macko contained the known technique of restricting the outlet with a particular size, shape, position, and number of outlets to provide a desired resistance to draw. It is found that one of ordinary skill in the art would have recognized that applying the know techniques to the known device would yield predictable results and an improved system, by adjusting the system to have a more desirable resistance to draw. See MPEP 2143 I. D. Applying a Known Technique to a Known Device (Method, or Product) Ready for Improvement to Yield Predictable Results, (1)-(3).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wensley et al. (US 2015/0196060 A1) as applied to claim1 above, and further in view of Jeong et al. (US 2022/0175015 A1).
Regarding claim 10, Wensley discloses a cap according to claim 10. Wensley discloses a liquid formulation and a heater element, wherein the heater element is located in the aerosol generation region, and wherein the liquid formulation is in fluid communication with the heater element, ([0007]). Wensley does not disclose the adapter comprises an air permeable filter element which air must pass through when passing through the aperture(s) or that the filter element is provided within the aperture(s).
Jeong teaches an aerosol generating device and system, ([0001]), and is thus within the inventor’s field of endeavor. Jeong further teaches that the filter may contain a flavoring component to increase a user’s satisfaction, which may include a variety of flavors, ([0080]). Jeong further teaches that the filter may be configured to function, where aerosol is allowed to pass therethrough but blocks the inflow of liquid, ([0080]).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to modify the adapter of Wensley according to the teachings of Jeong. In particular, one of ordinary skill in the art would have found it obvious to modify the base device of Wensley with a flavored filter element located in the opening of Wensley, such that air and aerosol drawn through the opening of Wensley must pass through the flavored filter, for the advantage of flavoring the airflow through the filter and also preventing liquid that may not be aerosolized from inhalation by a user. This is considered to be combining prior art elements according to known methods to yield predictable results, MPEP 2143 I. Examples of Rationales (A).
Here the prior art of Wensley comprises all the elements of the claimed device, with the exception of the air permeable filter element arranged such that air must pass through it or that the filter element is provided within the aperture(s). The prior art of Jeong teaches a flavored air and aerosol permeable, liquid impermeable filter element, which is used to flavor the aerosol and air flowing through the filter element. One of ordinary skill in the art could have combined these elements by known methods, such as sizing the filter element of Jeong to snugly fit within the opening of Wensley, such that the in the combination each element merely performs the same function as it does separately, the mouthpiece of Wensely providing ventilation for the aerosol generated by the device, the filter of Jeong flavoring the aerosol and air flowing through the filter. One of ordinary skill in the art would have recognized the results of the combination were predictable. One of ordinary skill in the art would have been motivated to provide the combination both to provide added flavor, and resulting user satisfaction from desired flavors, as well as preventing liquid inhalation through the adapter. See MPEP 2143 I. A. Combining Prior Art Elements According to Known Methods to Yield Predictable Results, (1)-(4).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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